Patent

First you need to understand what a patent does NOT do. A patent DOES NOT give you the right to make, use, or sell your invention. A US patent only gives you the right to exclude others--except the US Government--in the US and it's territories from making, using, and selling or importing your invention. An owner of an enforceable prior patent that is broader than yours and which reads on your invention can stop you, various laws can stop you, and the government can stop you from making, using, and selling your own invention. Your US patent has no effect outside the US or its territories. For some other important myths about patents see Patent Myths (www.willitsell.com/patmyths.asp).

Some other general facts about patents and products. You don't need a patent to make and sell a product. Less than 2% of all patents ever issued ever made any money for anyone. Less than 1% of all products on the market have any patent protection. And, patents don't make money, profitable sales do!

So why get a patent at all? Because a patent is a valuable business tool when it can be used to protect a profit stream. If a patent does not and cannot protect a profit stream in any way at all it is totally worthless. By definition then all expired patents are worthless--from a patent perspective though some may have some value as historic documents. Most unexpired patents are also worthless. The USPTO actually estimates that about 10% of all the patents they issue are worthless when issued simply because they are invalid when issued (in other words, around 17,000 invalid patents were likely issued last year alone). They could be invalid because what is claimed does not work or because prior art exists but was not discovered in the search process or the identified inventor was not the true inventor or other reasons.

In fact, about 50% of all patents whose validity is questioned in court are declared invalid. But it's also true that patent validity isn't contested in court if validity appears strong because the very least it will probably cost to mount the challenge will be over $100,000--and likely well over.

In short, getting a patent is not the answer to automatic riches. But getting a patent on a commercially viable product can certainly be a road to substantial income and maybe even wealth. Do your homework as suggested at www.willitsell.com to determine commercial viability first before getting too deep in patent expenses. Then, once you realistically decide your invention has a solid shot at commercial viability, it's time to move on to actual patenting efforts.

Provisional Application for Patent

My first step in actually preparing a patent application will be preparing and filing a Provisional Application for Patent (PAP). Provisional applications are very often mistakenly referred to as "Provisional Patents" or "Provisional Patent Applications." While I too have in the past used the "Provisional Patent Application" terminology I have come to realize just how wrong it is because it pairs "Provisional" and "Patent" and since everyone knows about "patents" it mistakenly leads many to erroneously believe that there must be such a thing as a "Provisional Patent." There most definitely is NOT. A provisional application NEVER issues as anything and is never enforceable.

The real truth of the matter is that it is the application that is "provisional." It is provisional on the fact that if you don't get your full application in within 12 months after filing the PAP you will lose the priority date of your PAP--at the very least. Depending on what you and others did during that year and in the time before you finally file a formal application (also often called/abbreviated a full patent application/FPA or a real patent application/RPA or a non-provisional application/NPA) you can lose all rights to obtain foreign patents and even all rights to a US patent. (Some folks use PA as an abbreviation for Patent Application but I don't like that because PA could also mean Patent Agent or Patent Attorney.)

For example, you file a PAP and start moving your invention toward the market. At 6 months your marketing firm starts distributing product brochures. At 9 or 10 months you realize you don't have the money to file your full application so you postpone starting on that and therefore miss FPA filing before the 12 months from the PAP filing runs out. You just lost all rights to foreign patents in all foreign (i.e., non-US) countries except Canada and Mexico. You finally get your full application done 6 1/2 months later and file it. At best (?, since the cost of losing an invalidation suit could kill your company) you will be issued an invalid patent or, maybe better, no patent at all since you will not be entitled to even a US (or Canadian) patent due to the brochure distribution more than 1 year prior to your FPA filing.

How hard is it to write a PAP? What are the rules? If you can explain your invention to somebody and provide understandable drawings of it you can do it all yourself. The drawings and text should be black ink (or equivalent, e.g., laser printer) on white paper, one side only, that is preferably either 8 1/2 x 11 or international A4 size however, if the drawings are on paper that can be folded to 8 1/2 by 11 and are reproducible on an ordinary black and white copier they will be accepted (but don't push your luck if you don't have to--ya hear what I'm sayin') and, at some point after your formal application filing you may be required to re-provide those drawings on 8 1/2 x 11 or A4 size paper.

To get a filing date for a submitted provisional application the text must meet the requirements of 35 U.S.C. Section 112 paragraph 1 (in essence, thorough, enabling to one of ordinary skill in the art, and including what you currently believe is the best mode) and, if drawings are necessary to understand the invention (hint: generally assume they are), thorough and understandable drawings.

Is the PAP application thoroughly reviewed in the PTO (Patent and Trademark Office) when the PTO receives it to be certain it meets these requirements? NO, a thousand times NO. The filed PAP receives only a cursory glance to see if it has the appearance of meeting the requirements and if it offhandedly appears to then it gets the PAP filing date which can later, after submission of your full application, be relied on as your priority date. Or can it? The answer is NO, the PAP cannot secure your priority date if your PAP really isn't properly thorough and enabling because the priority date that is held is relative only to what is actually understandably disclosed in the PAP that is also novel and non-obvious (i.e., claimable).

So, the rule is simple. Be your own worst critic and be certain you prepare a proper PAP that is thorough and enabling. If you later discover that something in your PAP was not right or was unclear you can (AND SHOULD) file a second PAP with the new information or corrections. You will be able to count on the priority date garnered by the second (or third, etc.) PAP for the material disclosed in it when you do your full filing. Your full filing can reference as many PAPs as you've filed for that invention but still must be filed within 12 months of the first one whose priority date you need or want to use. WARNING: A correction or clarification in a second or subsequent PAP (or in your FPA for that matter) is a double edged sword, the correction or clarification can be used to argue that your prior PAP DID NOT justify giving you the priority date for the later modified material but if you don't do it it can be argued that you have no priority date or claim at all to the not clear matter.

And, of course, in addition to being thorough and enabling your provisional application must meet some administrivia requirements. The best way to see what is required and to provide it is simply to fill out a printout of the USPTO's "Provisional Application for Patent Cover Sheet" which can be found on the web at www.uspto.gov/web/forms/sb0016.pdf.(Note: you'll have to have a PDF file reader to see the forms. A free one can be gotten from the Adobe Acrobat site at www.adobe.com/products/acrobat/readstep.html.) There is also an optional additional page for listing additional inventors if there are more than can be named on the standard application sheet.

You can create your own cover sheet if you want as long as you make it clear that the accompanying description (also called the specification) and drawings are to be handled as a Provisional Application for Patent and include the names and residential addresses of all inventors as well as one correspondence address plus the title of your invention (max 280 characters) and then as applicable, the name and registration number of the patent attorney or agent representing you (if any) and their in-house docket number (if any) and the names of any US Government agencies that have a property interest in the application.

And, oh yeah, did I mention the $65 check (or other payment if the fee changes or you aren't a micro entity) that must accompany the application? You can also pay by credit card using the "Credit Card Payment Form" found at www.uspto.gov/web/forms/2038.pdf. (See Adobe link above for how to get the reader.) If you want there are also other optional forms such as a "Fee Transmittal" (www.uspto.gov/web/forms/sb0017.pdf) but don't sweat them unless you really want to, they are not necessary. For information on how to actually submit your PAP online via the Internet to the USPTO see uspto.gov/patents/process/file/efs/ where you will have to jump through all the hoops.

What does your PAP filing get for you? That depends. It certainly gives you the right to put "patent pending" on your invention or in information about the invention (but only for one year). It also gets you, when done properly with thorough and enabling content, a "priority date" so that published references regarding material like or perhaps equivalent to yours after that date won't necessarily prevent or limit what your patent can cover. And, it lets you delay filing of your full application for one year while hopefully you verify commercializability. But...there's a downside too.

A provisional application also puts you under the gun to get a formal application submitted within 1 year or lose your priority date. Filing the PAP also starts the 1 year Paris Convention and PCT (Patent Cooperation Treaty) clock ticking which means that you either must file your foreign applications in any country where the Paris Convention is honored and/or file a full PCT application (which allows you to delay filing your full application for up to 30 months in PCT countries where you want to get a foreign patent) within the year too. And, lastly, it also starts the 18 month publication clock for publishing your timely filed formal application (more on this later). In my opinion you should NOT file a PAP until you've actually finalized your invention and just prior to making the public aware of it whether through publication of information or offering it for sale. Patent practitioners love to rush you into a PAP filing because they know they can put the big squeeze on you to pay them for the full application in 9 or 10 months. Make your own decision.

Types of Patents

As far as patents go there are basically 3 kinds: plant, utility, and design. All of the above material on PAPs does NOT apply to design patents for which PAPs are not allowed. If you think about it, it wouldn't make much sense to allow PAPs on design patents because design patents only cover the (near) exact ornamental appearance as shown in all the views so your design really would have to be 100% done to count as supporting any subsequent full design application. It also would considerably increase the already low cost of filing a design patent application. You can file PAPs for plant patents for non-tuber, asexually propagated plants but I'm not sure why you would want to (except for cost delay considerations) but we won't deal with plant patents here since our primary concern is what most people consider a "real" patent and that is the utility patent.

Utility Patents

Utility patents have a whole host of types including, new use, method (or process), device, chemical, software, business method, etc. For the most part their nuances are irrelevant when dealing with the patent and/or application use, creation, and processing. Where they differ is in the wording of the claims, their subject matter, and occasional specific nuances of law or rules. This material will not cover those nuances but will stick to the general. I highly recommend you use the services of a patent agent or patent attorney that is specifically knowledgeable in your invention's field and especially so if your invention is not a typical mechanical device.

Full Patent Applications

The formal utility patent application of course must be as thorough and enabling as any PAPs you filed before it. But in addition it must include some other components that are very important and it should follow the formal specification and drawing requirements. Can you get away without following the formal guidelines? Yes...sometimes. But why not do it right rather than open yourself up to requirements to fix things or risk not getting the patent?

The full application must, however, include 1 component that is not required in the PAP and that is your claims which "particularly point out and distinctly claim the subject matter that the inventor regards as the invention." It is the claims that actually spell out the scope of what your patent will protect and it is the wording of the claims that will determine whether your application is granted a patent or not, i.e., whether your invention is novel and non-obvious over the prior art.

Also "required" is an abstract of the disclosure but the USPTO might let you get away without this and just use your first claim as the abstract though this is discouraged. If you are a foreigner reading this and your foreign country doesn't require an abstract the US will probably allow you to get away without an abstract. But again, why play with fire? Include a 1 paragraph abstract. And just incidentally, US citizens should file in the US first in most circumstances involving independent inventors or should apply for a foreign filing license before filing in foreign countries. Normally when you file a PAP or FPA you will get a foreign filing license back in the mail in a couple of months or so.

Prior Art

Also mandatory, either in the specification or separately in an "Information Disclosure Statement," is that you identify prior art references (such as other patents or published articles) known to you that may have a bearing on the novelty or non-obviousness of your invention. If you didn't do any prior art search and know of nothing like your invention you don't have to provide this information. But if you do know about such prior art you have a "duty of candor and good faith" to inform the PTO. If you know about something relevant and you fail to disclose it you risk the future invalidation of any patent you might get. It is considered a "fraud on the PTO" and if it can be shown you knew of the prior art and failed to disclose it--even if the PTO finds the reference on their own when researching your application--your patent can be invalidated by a challenger.

In fact, if you discover a prior art reference anytime while your application is pending up until (if the patent is allowed) you've paid the issue fee you are obligated for the above reasons to notify the PTO of the reference and include your application number. If you chose to use an "Information Disclosure Statement" it is not technically part of the application and should be submitted, if not with the application, within 3 months after you submit your application. The statement, or subsequent supplemental ones, can however be submitted before the "final office action" or "notice of allowance" but you may be required to pay some late fees if your submission is more than 3 months after your discovery of the reference.

(An aside here. You'll often hear that you should closely guard your application number assigned by the PTO and not give it to anybody. The reasons given are that someone could use that number, misrepresent themselves, and get a copy of your pending application or that they would be able to send in a prior art reference and exactly alert the PTO to which application the reference should be applied against. In the first case someone would have to commit fraud and it would be very hard for them to get the PTO to accept their fraudulent representations so I wouldn't worry about it much. In the second case, why would the party having the prior art want to bother with the trouble of finding out your application number and sending the reference to the PTO when all they have to do is give or send the reference to you--you're then OBLIGATED, if it's actually new to you and actually relevant, to submit it to the PTO.)

Are you starting to sweat? Is this a lot of work with a lot of details? You bet--but I've barely started. It is not impossible however for you to sort it all out and to file your own application and I do not want to discourage you from doing so. Even if you pay someone else to write and file your application I still encourage you to learn as much about the requirements as you can.

Formalities of the FPA

Let me throw just a couple more of the formalities of full application at you before I direct you to a couple of sources of more detailed information. Your formal application should have section headings that were not required in the PAP. These headings, followed, of course, by appropriate clear and understandable text, include: Title of the Invention, Cross-References to Related Applications, Statement Regarding Federally Sponsored Research and Development, Background of the Invention, Summary, Drawing Figures (this is text about the figures, not the drawings themselves which, of course, still are essential), Description, Claims, and Abstract. Depending on the subject matter of your invention some other headings may also be required. Among other things, you will also need to include in your patent application specification a "statement regarding prior disclosures by the inventor or a joint inventor" which is where you identify where and when you did any prior disclosures of the subject matter claimed and/or any joint research agreements. You include these and any documentation and affidavits required as part of your "duty to candor" and, of course, to preemptively provide, as shown in the table on /firsttofile.asp, those "unless" exceptions that show your disclosure was within the grace year and so that the examiner doesn't reject your patent when you are entitled to the exception.

Avoiding 18 Month Publication

After you submit your application with all essential requirements met including paying the filing fee your patent application will be kept secret until the earlier of its issue as a patent or 18 months from your filing date. Usually the 18 months will occur first and, remember, if you filed a PAP and you referred to it in the Cross-References to Related Applications section of your application in order to get the PAP's priority date it's the PAP's filing date that started the 18 month clock. You can, however, keep your application from being published in 18 months by certifying that you have no plan to file foreign applications and you therefore request suppression of 18 month publication. You can use the "Non-Publication Request" at www.uspto.gov/web/forms/sb0035.pdf to request such non-publication so long as you submit the form with your application.

If you later change your mind and do decide to file foreign applications you must notify the PTO within 45 days of taking action, i.e., actually filing a foreign application, on that change (or any US patent issued to you will by law automatically be invalid) and, at the very latest, the PTO must be notified no less than 2 months before the 18 month time expires. Be aware that other actions such as putting prototypes of your invention on the market just after PAP filing may have already made it impossible for you to get foreign patents even though you beat the 2-month-before-the-18-month date and that the act of filing a foreign application after 1 year from your priority date will, in almost all foreign countries, cause you to lose the right to use that priority date even though it may not preclude you from getting the foreign patent.

International Patents

Just a word or so about international patents. First there is no such thing as a worldwide patent or even a worldwide patent application. There are some opportunities to file some "international" patent applications such as in the European Union but you will still be required to pay the fees for any country you wish to have "rubber stamp" and grant you a patent enforceable in their country for your approved application to the European Patent Office. (Unfortunately not here yet but coming in 2015 will be the European "unitary patent.") You can also prepare a Patent Cooperation Treaty (PCT) application and file it with the USPTO (yes, the same place you file a US application). The US is one of 115+ countries that support the PCT under the auspices of the World Trade Organization (WTO - www.wto.org)) and the World Intellectual Property Office (WIPO - www.wipo.org).

The PCT application is a standardized application format that all PCT countries have agreed to accept in lieu of most of their country specific requirements but the catch is the PCT application itself never issues as a patent. The PCT application, complete with it's filing fee, can be used primarily to buy a delay in when you must file, with more fees of course, patent applications in each country you wish to obtain a patent in. You can delay foreign filing up to 20 months from your priority date if you only go through the PCT Search stage. However, if within 19 months you elect to go through "preliminary examination" and, with more fees of course, file your demand for such examination you can thereby delay for up to 30 months (31 in a few countries) when you must file individual country (or regional) patent applications formatted as, and disclosure wise nearly identical to, what your PCT application already is.

Figure at least $100,000 for 4-6 foreign applications including required translation costs, filing, fees, agent costs in appropriate countries, etc. In other words, do your market analysis homework and only file in countries where you believe you can make a substantial profit above the cost of the application. Even without foreign patents you can still block the importing of your US patented invention into the US for the duration of your US patent term.